DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Pending:
1-9, 12, 13, 15-17
Withdrawn:
12, 13, 16, 17
Rejected:
1-9, 15
Amended:
1, 3, 12, 15
New:
NONE
Independent:
1
Claim Interpretation
Amended claim 1 recites the limitation “pre-aging of the sheet during at least 8 hours at a temperature from 50°C to 95°C, 95°C being excluded, by coiling the sheet at a coiling temperature from 50°C to 95°C, 95°C being excluded” which is interpreted to mean a coiling temperature from 50°C to <95°C. If this interpretation is not consistent with applicant’s intended interpretation, please clarify (including where said interpretation is found in the original specification) in response to this action.
Claim 8 recites the limitation “a coiling temperature from 70°C to 95°C, 95°C being excluded” which is interpreted to mean a coiling temperature from 70°C to <95°C. If this interpretation is not consistent with applicant’s intended interpretation, please clarify (including where said interpretation is found in the original specification) in response to this action.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-9, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al (US 2016/0047021), previously cited, further in view Das (US 2019/0119799), previously cited.
Nakamura teaches a method of making a rolled product for automobile body parts [0003], said process comprising steps of:
Claim 1
cl. 6
Nakamura
Casting an ingot
Vertical semi-cont casting
(cl. 7)
Semi-contin. casting an ingot
[0064]
Homogen.
520-560°C
*2-8 hrs
Homogenize 500-580°C
1-10 hr
[0065-0066]
Hot roll to thickness 3-10 mm
Hot roll to thickness typically 3 mm
[0088]
Cold roll to sheet 1-4 mm
Cold rolling to thickness typically 1 mm
[0089]
Solution heat 540-580°C, quench
*1 s- 5 min
Solution heat 500C or higher
[0019]
Pre-age 50<95°C t≥8 hrs by coiling
Pre-aging 70<95°C (cl. 8)
Heating 70-150C
[0102], Fig. 4
Pre-aging 50-70°C (cl. 9)
(coiling not mentioned)
Natural aging
*ambient temp 72 hr-6 months
Return to room temperature implied
(examples, etc)
*=and/or
Table 1: comparison of instant claims with process of Nakamura
wherein the process steps taught by Nakamura meet the claimed process steps, and the parameters taught by Nakamura overlap the claimed parameters (i.e. time, temperature, and thickness limitations, see Table 1 above). Further, Nakamura teaches an aluminum alloy comprising (in wt. %):
Cl. 1
Nakamura broad
Si
0.75-1.1
0.4-1.5
Mg
0.75-1.0
0.3-1.0
Cu
0.5-0.8
≤1.0
Fe
-0.4
≤0.5
Ti
-0.15
≤0.3
Mn
0.1-0.4
≤0.5
V
-0.1
≤1.0
Cr
-0.1
≤0.3
impurities
≤0.05ea
≤0.15 total
≤1.0
Table 2: Nakamura vs. Instant claims
see Nakamura at [0034-0044], which broadly overlaps the alloying ranges of Si, Mg, Cu, Fe, Ti, Mn, V, Zr, Cr, and impurities of instant independent claim 1.
Nakamura does not specify heating to a low temperature (i.e. pre-aging) and thereafter coil cooling post solution heat treating. However, secondary reference of Das teaches pre-aging Al-Mg-Si alloy sheets after solutionizing together with coil cooling [0076] in order to produce favorable formability and strength combination (see Das at examples).
Because Nakamura together with Das teach subjecting an overlapping Al-Mg-Si alloy to identical steps of casting, homogenizing, hot rolling, cold rolling, solution heating, quenching, heating to temperatures that meet the instant preaging temperature, and wherein naturally aging is implied (see Table above, see also Das at [0077]), together with overlapping processing parameters, it is held that Nakamura and Das have created a prima facie case of obviousness of the presently claimed invention.
Concerning claims 2-5, see above discussion of alloying ranges.
Concerning claim 6, 8-9, as set forth above, Nakamura teaches overlapping steps and parameters (see Table 1 above), and therefore meets the instant limitations.
Concerning claim 7, which mentions vertical semi-continuous casting, Nakamura teaches casting by semi-continuous casting [0064]. It would have been obvious to one of ordinary skill in the art to have cast the Al-Mg-Si alloy of Nakamura by a known semi-continuous casting method, such as vertical semi-continuous casting (as claimed), because Nakamura broadly teaches semi-continuous casting.
Concerning claim 15, Nakamura teaches the formed Al-Mg-Si sheet can be further processed by forming (such as press forming [0108]) and paint baking [0114] at 170°C for 20 minutes [0114], which meets the instant limitations.
Claim(s) 1-9, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al (US 2016/0047021), previously cited, further in view of Oh et al (US 5,690,758), cited herein.
Nakamura teaches a method of making a rolled product for automobile body parts [0003], said process comprising steps recited in Table 1 above, wherein the process steps taught by Nakamura meet the claimed process steps, and the parameters taught by Nakamura overlap the claimed parameters (i.e. time, temperature, and thickness limitations, see Table 1 above, including the amended pre-aging temperature). Further, Nakamura teaches an aluminum alloy comprising overlapping alloying ranges (see Table 2 above, see Nakamura at [0034-0044]), which broadly overlaps the alloying ranges of Si, Mg, Cu, Fe, Ti, Mn, V, Zr, Cr, and impurities of instant independent claim 1. Further, secondary reference of Oh et al teaches selecting an alloy with relatively higher ranges of Si, Mg, Cu, as well as the presence of Mn leads to high strength and formability (see alloy D, Tables 1 & 3 of Oh et al). It would have been obvious to one of ordinary skill in the art to have applied the process of casting, rolling, and forming a sheet taught by Nakamura to the Al-Mg-Si-Cu alloy of Oh et al. because Oh teaches said Al-Mg-Si-Cu alloy has excellent combination of strength and formability/ductility.
Nakamura does not specify heating to a low temperature (i.e. pre-aging) and thereafter coil cooling post solution heat treating. However, secondary reference of Oh et al teaches pre-aging by coiling at temperatures 60-250C for 1 min-10 hours, wherein said treatment is effective to allow the development of an intermediate phase, favorable to the mechanical properties of strength and formability of the alloy (column 3 lines 30-35 see properties in Tables 3 & 4). It would have been obvious to one of ordinary skill in the art to have pre-aged by coiling at 60-250C for 1 min-10 hours taught by Oh et al, which meets the instant pre-aging step and overlaps the claimed parameters, because Oh et al teaches said treatment is effective to allow the development of an intermediate phase, favorable to the mechanical properties of strength and formability of the alloy (in particular, Al-Mg-Si alloys with relatively higher ranges of Si, Mg, Cu, as well as the presence of Mn, see alloy D, Tables 1 & 3 of Oh et al).
Because Nakamura together with Oh teach subjecting an overlapping Al-Mg-Si alloy to identical steps of casting, homogenizing, hot rolling, cold rolling, solution heating, quenching, heating to temperatures that meet the instant preaging temperature, and wherein naturally aging is implied (see Table above), together with overlapping processing parameters, it is held that Nakamura and Oh et al have created a prima facie case of obviousness of the presently claimed invention.
Concerning claims 2-5, see above discussion of alloying ranges.
Concerning claim 6, 8-10, as set forth above, Nakamura teaches overlapping steps and parameters (see Table 1 above), and therefore meets the instant limitations.
Concerning claim 7, which mentions vertical semi-continuous casting, Nakamura teaches casting by semi-continuous casting [0064]. It would have been obvious to one of ordinary skill in the art to have cast the Al-Mg-Si alloy of Nakamura by a known semi-continuous casting method, such as vertical semi-continuous casting (as claimed), because Nakamura broadly teaches semi-continuous casting.
Concerning claim 15, Nakamura teaches the formed Al-Mg-Si sheet can be further processed by forming (such as press forming [0108]) and paint baking [0114] at 170°C for 20 minutes [0114], which meets the instant limitations.
Response to Amendment
In the response filed 4/8/26 applicant amended claims 1, 3, 12, and 15 and submitted various arguments traversing the rejections of record. No new matter has been added.
Applicant’s arguments with respect to claim(s) 1-8, 10, and 15 over Florey have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The closest prior art to the presently amended claims is held to be Nakamura in view of Das et al or Nakamura in view of Oh et al.
Applicant’s argument that the instant invention is allowable because the prior art does not teach or suggest the combination of strength and ductility achieved by the claimed invention has not been found clearly persuasive. Applicant has not shown specific evidence of unexpected results (such as a strength/elongation combination with respect to the closest prior art of Nakamura and Das or Nakamura and Oh.
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP §716.02(d) - § 716.02(e). With respect to said indirect comparison, applicant a) may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner, In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961), or b) show criticality of the instant range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
More particularly, applicant has not shown the instant invention exhibits unexpected strength in view of the teachings of Nakamura and Das (or Nakamura and Oh), because applicant has not clearly compared the claimed invention to the closest prior art, or to art that is clearly closer than the closest applied prior art. Applicant’s representative argued Nakamura teaches a temper of “AB proof stress” which is “similar to T6B temper”, and exhibits inferior yield strength (also termed “proof stress”) because of such. However, applicant has not provided specific evidence (in a 1.132 declaration, see MPEP 716.02(e )) detailing the differences between the tempers of the prior art and the instant invention, and therefore it is not clear that Nakamura exhibits inferior strength, for a given temper condition.
An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential), see MPEP 716.02(e ).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANELL COMBS MORILLO whose telephone number is (571)272-1240. The examiner can normally be reached Mon-Thurs 7am-3pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 6/10/26
Prosecution Insights